This week, as Women's Wear Daily reported yesterday, YSL filed its brief opposing Louboutin's motion for a preliminary injunction. A "preliminary injunction" is an order that a judge is empowered to issue near the beginning of a case, to prevent a party from taking (or force a party to take) a particular action until the case is resolved. In many cases, and in intellectual property disputes in particular, a court's ruling on a preliminary injunction motion can effectively end the litigation by causing the parties to settle. Why? Well, one of the questions a judge must answer in order to grant a preliminary injunction is whether there is a "substantial likelihood of success on the merits" of the case. If you're a plaintiff seeking a preliminary injunction, and a judge denies the requested injunction on the ground that you aren't likely to win your case, you're probably not going to waste the time and money to continue pursuing the litigation. Of course, there are exceptions, but we're big-picture here at LAW OF FASHION. For the, um, small picture, you'll have to consult this writer in his capacity as an attorney, rather than as a blogger.

Anyway, as mentioned above, YSL submitted a brief responding to Louboutin's motion on Tuesday, and it's a blockbuster. To the credit of plaintiffs' counsel, Louboutin's opening salvo in the preliminary injunction battle was strong, but YSL's brief (courtesy of Debevoise & Plimpton's David Bernstein and, undoubtedly, an army of associates who get bragging rights but no credit on the record) is a very compelling piece of advocacy. It's also important to note, for the game theory aspect of the case, that YSL has launched its own counter-offensive while defending against Louboutin's claims; specifically, it has moved to cancel Louboutin's federal registration for its red-sole trademark on the grounds of, among other things, functionality and fraud on the Trademark Office.

To save you the trouble, again, of reading through YSL's entire brief, LOF will highlight passages it found especially interesting or persuasive (bold, italics, hyperlinks, and [bracketed portions] mine):

"Granting trademark protection for a color on a fashion product would inherently interfere with the design options available to other designers." [Ed. It's already well-established that color alone may serve as a trademark on at least some products.] YSL then quotes a 2010 opinion written by influential appellate judge Frank Easterbrook, which held a trademark on the shape of a round towel was unenforceable because "[g]ranting a producer the exclusive use of a basic element of design (shape, material, color, and so forth) impoverishes other designers' palettes." (Emphasis YSL's.) [Ed. In the same opinion, Judge Easterbrook wrote that "[f]ashion is a form of function," which, if taken literally, could conceivably mean that there could never be trademark protection in a fashion piece. Seventh Circuit trademark lawyers, take note!]

"While idiosyncratic patterns and designs certainly can and have been protected on fashion items, we are unaware of any case in which a court has upheld trademark protection to a mark consisting solely of a single color on a portion of an article of apparel." [Ed. Remember that intriguing "issue of first impression" I mentioned earlier?]

"The evidence in this case demonstrates that use of the color red on the outsoles of shoes is aesthetically functional [and thus unprotectable]. Mr. Louboutin himself admits that he started using red on outsoles, not as a source-identifier, but rather [because] it gives his shoes 'energy,' 'is engaging, flirtatious, memorable and the color of passion,' and because it 'appeals to everyone and is sexy.' . . . The widespread use of red outsoles by third parties . . . further demonstrates that many designers believe a red sole serves an aesthetic function of making a shoe more appealing or beautiful. Trademark law is not intended to give one designer a monopoly on a 'beautiful' or 'appealing' use of color in fashion design."

"[I]f Louboutin is permitted to maintain a monopoly on the use of red outsoles[,] YSL would be prevented from executing one of its own venerable design traditions -- monochrome shoes -- in a color that has long been an integral part of the brand's palette. . . . Indeed, if Louboutin were to have its way, no other designer would ever again be permitted to make an all-red shoe." [Ed. YSL may be overreaching here; Louboutin makes clear in its court filings that it claims trademark protection only in bright-red lacquer soles of the particular shade at issue... which readers of my weekly Styleite.com column will recall requires a custom blend of paints to recreate.] "A small oligarchy [of fashion companies] could claim ownership of the right to make any colored soles and, by extension, any monochromatic shoes in that palette of basic colors." [Ed. This argument has its appeal, but it's similar to a "color exhaustion" argument that the U.S. Supreme Court rejected in a 1995 trademark case nicknamed "Qualitex"; to adopt YSL's exhaustion argument, the judge would seemingly have to rule that fashion is inherently different from non-aesthetically-oriented products, such that Qualitex does not apply here.]

"Even if Louboutin's mark were non-functional, it would still be invalid because Louboutin cannot establish that it has acquired secondary meaning." [Ed. This may be the weakest part of YSL's brief; it focuses on the flaws in Louboutin's consumer surveys, but doesn't do much else. While YSL shouldn't necessarily concede the point, one has to wonder what color trademarks do enjoy the requisite secondary meaning among the relevant consumers, if not "Louboutin red"?] "YSL retained [its own] survey expert to conduct a properly constructed survey to measure secondary meaning. [Our] survey shows that . . . only 24% of relevant consumers associated red soles with a single source [and based on past cases, that is insufficient.] The fact that YSL and dozens of third parties have sold and continue to sell women's footwear with red outsoles . . . further precludes a finding that relevant consumers associate a red sole exclusively with the Louboutin brand."

"[E]ven if Louboutin could establish that it has a valid mark (which it cannot), there is no likelihood of confusion in this case. . . . [I]t is virtually inconceivable that any consumer at the point-of-sale would actually buy a YSL shoe in the mistaken belief that she is buying a Louboutin. These are expensive products, generally costing around $800 or more per pair, and as Mr. Louboutin himself has acknowledged, [the relevant] consumers are sophisticated and generally exercise care before making a purchase. . . . Louboutin uses a single shade of red on all its outsoles, while YSL uses a wide variety of red shades, all of which Louboutin challenges indiscriminately." [Ed. Louboutin takes issue with this assertion elsewhere.]

[Further, despite] many years of co-existence with red-soled shoes made by YSL, Louboutin admits it is unaware of any actual consumer confusion . . . . Louboutin['s survey] is so deeply flawed that it should be disregarded . . . . Participants were shown a still-image close-up of the sole of a YSL shoe, from a ground-level perspective directly behind the sole . . . . This image did not replicate real-world conditions, focused unnaturally on the sole, and hid the overall appearance of the shoe. [When YSL did its own survey using a video that] replicated real-world conditions and showed the shoes from all angles . . . less than 5% . . . of survey participants expressed the belief that the YSL shoes were made by Louboutin."

(For you trademark veterans, I'll just say that YSL then tries to dispose of any possible claim for harm resulting from "post-sale confusion" by arguing that "[t]his theory of harm is inapplicable . . . where [as here] the parties' respective products are equally expensive and prestigious.")

Finally, regardless of all other issues discussed, YSL argues that it "has a complete defense -- its use of a red outsole is a 'fair' use under Section 33(b)(4) of the Lanham Act [because] its use of the purported [red sole] mark is (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith." Unlike Louboutin, "YSL does not use red outsoles . . . as a 'signature' element contrasting sharply against the rest of the shoe [i.e., YSL is not using red soles as a trademark.] YSL uses red outsoles descriptively as expressions of its design concepts . . . [Finally, t]hat all YSL shoes bear the 'Yves Saint Laurent' name and YSL logo also demonstrates that YSL's use is 'in good faith.'"

YSL's attorneys go on to devote some perfunctory paragraphs to Louboutin's secondary causes of action (trademark dilution, state-law unfair competition, etc.), but they seem to assume -- correctly -- that if they haven't won the judge over by this point in the brief, the jig is up. Elsewhere in its filing, YSL tackles the three remaining preliminary injunction factors, but its discussion of them isn't especially interesting -- except for YSL's attempt to show "inexcusable delay" in part based on Louboutin's agreement to a three-and-a-half month briefing schedule on the motions, while YSL's shoes continued to be sold. Attorneys often agree to drawn-out briefing schedules, in part because it makes everyone's life easier. So calling out Louboutin for arguably "gentlemanly" behavior was sort of a dick move ungentlemanly.

The bottom line: YSL has a raft of solid arguments, but some of them, if adopted by the judge, would require the court to make new law. Many district court judges are loathe to do so, especially where they would have to distinguish Supreme Court precedent in the process. Alternatively, the court could dodge the tough issues, especially the question of aesthetic functionality, and resolve the case neatly by ruling that this particular red sole, at least, is a "fair use." But the "neatness" of this route to disposing of the case might be illusory: ruling that YSL's use was "fair" because it used red soles in a "descriptive" sense is awfully close -- maybe even tantamount -- to ruling that it was legit for YSL to use red soles because the color was functional, i.e., that "no one can have a monopoly on a color when it comes to fashion."

Either way, this case is keeping life interesting for fashion lawyers. LOF will keep you... posted, so to speak.

[This post does not constitute legal advice or form an attorney-client relationship with any person or entity. The parties' briefs have intentionally been chopped apart and pieced back together, for ease of reading. Although it should go without saying, the parties may not have intended the passages in the manner LOF has characterized them here. To see the court filings in their entirety, go to Scribd.]

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